MadTree Gnarly Gno More, Delicato Vineyards, and USPTO Case 91221518

Over the past few weeks, some events have popped up featuring varieties of MadTree’s Gnarly Brown and using the phrase “Gnarly Gno More.” MadTree had remained silent on the subject until this Tumblr post from this afternoon. That post resulted in many negative attacks directed at MadTree on Facebook from people upset about losing a favorite beer. MadTree never explained why they’re killing Gnarly Brown and replacing it with P.S.A., so I decided to do some digging.

My initial thought is that in previous cases when a brewery has changed a name like this there has been a trademark issue. Following this thread turned up the following.

MadTree Gnarly Brown Delcato Gnarly Head
Screenshot of USPTO filing

You can read the whole thing on USPTO.gov here, but I’ve got the summary below. This issue got started when MadTree applied for a trademark on Gnarly Brown on June 24, 2014.

Notice of Opposition from Delicato

Delicato’s lawyers filed an opposition, shown above, to MadTree’s trademark application on April 15th, 2015. Delicato trademarked and started using Gnarly Head as of April 15th, 2005. Delicato also contends that both trademarks use the word “Gnarly,” both appear with “gnarled plant designs,” and both relate to alcoholic beverages.

Answer from MadTree

MadTree’s lawyers then responded on May 25th, 2015 arguing that Delicato wouldn’t be damaged by MadTree using Gnarly Brown. They also contended that Delicato’s mark applied to wine whereas MadTree’s is for beer. MadTree’s lawyers went on to say that:

the parties have engaged in good faith settlement discussion and intend to continue such good faith settlement discussions going forward.

From there on out, the only thing on USPTO.gov is continuations of time and mentions of being in good faith negotiations. The most recent one of these being February 1st, 2016.

Let’s check out what each of these labels looks like: first off, most of you are likely familiar with

MadTree Gnarly Brown

MadTree Gnarly Brown
Image from USPTO filing

But, you may be less familiar with

Delicato Gnarly Head Authentic Red

Delcato Gnarly Head
Image from USPTO filing

As we see Delicato’s got a point here; they do both say “Gnarly” and they do both have gnarled trees. Personally, I don’t see a lot of confusion between a can of beer and a bottle of wine. Unfortunately, that possibility for confusion could be enough to prevent MadTree from getting the trademark.

It’s critical to remember that if a company doesn’t protect their trademark now, they cannot protect it later. If Delicato ignored the MadTree mark, it would weaken their argument if another winery started using “Gnarly” or a gnarled tree later on.

Lagunitas Olde GnarlyWine

Now, a question that immediately popped into my head is what about Lagunitas Gnarlywine? That’s a heck of a lot closer in name and beer style than MadTree Gnarly Brown, barleywine and hoppy brown ale respectively.

Lagunitas GnarleyWine
Image from USPTO filing

Lagunitas applied for a trademark on GnarlyWine in 2007, but E. & J. Gallo Wines objected to it due to their pre-existing mark on Gnarly Vine. Lagunitas applied for a mark again in 2011, not sure why, but the USPTO appears to have shut it down due to the earlier case in 2008.

I am left to assume there must have been some peaceful negotiation between Lagunitas and Gallo since Lagunitas is still using that name.

Not The First and Not The Last

This case is far from the first time craft beer has encountered trademark issues. West Sixth and Magic Hat had a blow up on Facebook a few years back. While researching this today, I saw Brooklyn Brewing is taking issue with a Black Op Brew Works since Brooklyn makes a beer called Black Ops. The West Sixth/Magic Hat thing seemed quite stupid with it being over 6 vs. 9 and a star. The Brooklyn/Black Ops thing and this issue between MadTree and Delicato both seem more clear-cut.

Unfortunately, in an increasingly crowded marketplace things like this are apt to become more frequent. If you are thinking of opening a brewery, or any business, prepare for thorough research to make sure you don’t end up having to rename or remove a core brand. Luckily, it seems that MadTree and Delicato are working things out and won’t be suing each other.

I reached out to MadTree for comment, and they had no comment at this time. I assume that the continuing good faith negotiations require them to keep quiet on the details. I imagine they’ll say what they can when they can, but for now, if you love Gnarly Brown you should buy a few cases while it’s still around.

2 thoughts on “MadTree Gnarly Gno More, Delicato Vineyards, and USPTO Case 91221518”

  1. This is nicely written post with an easy to understand discussion of the intellectual property issues in this specific case and also a good explanation of the trademark registration process. I used as a discussion case in a technology ethics class I teach. The students enjoyed discussing the case and the process for registering and reviewing new trademarks.

    I plan on using this in future versions of the class and wanted to see if you would give me permission to save a PDF version of this post that I can include in the online class materials (only accessible to students and instructors) as a backup in case students can’t get to this original post.

    Like

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